Federal Circuit affirms rejection of trademark for refusal to disclaim descriptive term

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Federal Circuit Review – Issue No. 64-04
Federal Circuit Affirms Rejection of Trademark Application for Refusal to Disclaim “Highly Descriptive” Term “FISH FRY PRODUCTS”

In re: Louisiana Fish Fry Products, Ltd., No. 2013-1619, 2015 U.S. App. LEXIS 14258 (Fed. Cir. Aug. 14, 2015) (Before Newman, Reyna, and Hughes, J.) (Opinion for the court, Reyna, J.). Click Here for a copy of the opinion.

On appeal from the Trademark Trial and Appeal Board (“TTAB”), the Federal Circuit affirmed the denial of a trademark registration for a mark using the term “FISH FRY PRODUCTS” based on insufficient evidence that the mark had acquired distinctiveness.

Louisiana Fish Fry filed a use-based trademark application for the mark LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME!  During prosecution of the application, the Examiner refused to register the mark without a disclaimer of the term FISH FRY PRODUCTS on the grounds that the term was not independently registrable. Louisiana Fish Fry submitted a declaration from its president stating that the mark LOUISIANA FISH FRY PRODUCTS had been in use for over thirty years, had been used extensively in advertising, and had acquired distinctiveness.  The Examiner maintained that the term FISH FRY PRODUCTS was generic, because the relevant public understood the term to refer to a variety of similar products. Alternatively, FISH FRY PRODUCTS was at least “highly descriptive,” which increased the burden to show distinctiveness: that the relevant public would recognize Louisiana Fish Fry as the source of the product.

Louisiana Fish Fry appealed to the TTAB, which affirmed the Examiner’s decision.  The Board found that FISH FRY PRODUCTS was generic for the products in question. It also affirmed that Louisiana Fish Fry failed to carry its burden of showing that FISH FRY PRODUCTS was distinctive, because its evidence related to LOUISIANA FISH FRY PRODUCTS and not to FISH FRY PRODUCTS standing alone.

The Federal Circuit affirmed the TTAB, noting that substantial evidence supported the TTAB’s findings. Where, as here, the disputed term is highly descriptive, the TTAB acted within its discretion in refusing to accept evidence of five years’ use as prima facie evidence of distinctiveness. Further, use of the larger term LOUISIANA FISH FRY PRODUCTS did not establish that the subset FISH FRY PRODUCTS is distinctive. The Court did not find it necessary to decide if the term is also generic, given that Louisiana Fish Fry’s failed to show distinctiveness.